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Oatly AB v Bidfood Limited [2022] NZIPOTM 20 (22 September 2022)

Bidfood Limited has successfully opposed Oatly AB’s application to register the trade mark BARISTA in New Zealand, in relation to milk substitutes including oat based drinks in Oatly AB v Bidfood Limited [2022] NZIPOTM 20 (22 September 2022).  The case is one that trade mark attorneys may wish to discuss over an oat milk latte.

IPONZ initially assessed that BARISTA was sufficiently distinctive to qualify for registration as a trade mark, so how did Bidfood win?

Is BARISTA distinctive of milk, milk substitutes?

Bidfood provided evidence demonstrating use of the word BARISTA by multiple traders in New Zealand in relation to oat, soy and almond milks both before and after the filing date of Oatly’s BARISTA trade mark application. Although almost none related to oat milk, Bidfood’s counsel asserted that it would be odd if BARISTA could be distinctive for oat milk, but not for soy, almond or coconut milk.

Bidfood also relied upon expert evidence from Dr Valentyna Melnyk, a professor of marketing and research director at the school of marketing, UNSW Business School at the University of New South Wales. Her expert evidence included an assertion that:

Given that the sign BARISTA has been used so prominently for dairy products and the growing number of brands introducing BARISTA for milk substitute (outlined above), consumers and producers alike are using BARISTA as a sub-category differentiating within different types of milk of the same brand (e.g., light vs. full cream vs. BARISTA), rather than between parties (such as brands).

The Assistant Commissioner relied upon the expert evidence and Bidfood’s evidence of numerous third party use of the term BARISTA to conclude that consumers could not rely upon BARISTA to determine the origin of milk substitutes.

Could Oatly rely upon “spill over” reputation?

Potentially, Oatly may have been able to establish acquired distinctiveness of the BARISTA from the UK, before the relevant filing date. However this fell down on two grounds, both important reminders for trade mark attorneys:

1. Oatly’s evidence in relation to use of BARISTA in the UK rarely demonstrated use of BARISTA on its own, as it was almost always in the form such as OATLY BARISTA EDITION, BARISTA EDITION, OATLY BARISTA or HEY BARISTA. Oatly’s own evidence also showed undifferentiated use of the term in phrases such as “HOPE A BARISTA WALKS PAST..”, “GET THE ATTENTION OF A BARISTA” etc.

2. Oatly’s counsel did not assert in its counterstatement that BARISTA had acquired a distinctive character before the relevant date and nor was there any reference to the relevant legislation.  The Assistant Commissioner reminded IP Lawyers that omissions from a counterstatement in opposition/revocation proceedings can be fatal to pleadings. In this case, whilst the Assistant Commissioner effectively ruled out any claim to “acquired distinctiveness”, Oatly would not have been able to rely upon any such assertion as it was not contained in its counterstatement.

A similar result is unlikely to have occurred in Australia and is a reminder, once again, that New Zealand trade mark opposition/revocation proceedings are not the same as their Australian cousins. In particular, rules of evidence and pleadings are applied rigorously in New Zealand.

Watch your evidence and pleadings in New Zealand

As with many (if not most) New Zealand trade mark oppositions, a significant portion of this decision discussed the admissibility or inadmissibility of evidence. Specifically, Oatly’s evidence included a declaration by its attorney. Whilst IPONZ warns that counsel should not give their own evidence in proceedings, this was not an issue in this case as the attorney did not appear herself. However, the relevant Oatly declaration did contain two unsworn statements from Oatly’s general manager.

Even if Oatly’s evidence were considered admissible, the Assistant Commissioner observed that the evidence  falls far short of establishing spill over reputation in New Zealand at the Relevant Date”.

Whilst this decision is largely as one may have expected, it is nonetheless a telling reminder that the rules of evidence and drafting are applied much more rigorously in New Zealand than in Australia. As the Assistant Commissioner herself adroitly observed:

The whole purpose of pleadings is fully and fairly to inform the opposite parties of the claims or defences they face…A party is responsible for the advancement of his or her own case, and for making it plain what is being put in issue.

Australian and kiwi lawyers – you have been warned!